A clearer than usual trademark ruling

By Dr Michael Factor on April 9, 2013 • ( 0 )

Reckitt and Colman filed a trademark application for Clearasil Stayclear.

Mediline LTD., who manufactures and markets a facewash called Clearex, filed an opposition, claiming trademark infringement, unfair competition and unjust enrichment.

One argument submitted was that the adolescents who suffer from acne might be more likely to confuse the products and to have poor English skills.

In a ruling that is unfortunately not signed, so I don’t know who was responsible, the adjudicator at the Israel Patent Office applied the triple test and considered that the marks looked and sounded sufficiently different that there was no real likelihood of confusion, noting that Clearasil stayclear is rather longer than Clearex. Although the two products are sold for similar purposes and via similar outlets, since both names are derived from the English word clear, there were no convincing grounds of bad faith. Somewhat confusingly, the adjudicator ruled that the respective marks are promounced Clea-Rex and Clea-Ra-Sil, whereas I would have put the R at the end of the first syllable, but then again, English is my first language.

In a neat twist, the arbitrator noted that for the ClearEx trademark to be registered, the opposer had had to argue that clearex was not confusingly similar to Clearasil, and it is certainly more similar to Clearasil than to Clearasil Stayclear.

I suspect that Israeli high school kids practice their English and speak English at least as much as their parents. I phoned my daughter (aged 15, non-English speaker) to ask if the two words were similar, and she announced that they both mean נקי – clean. So perhaps there is something in the claim that teenagers are easily confused. I didn’t ask my Israeli, Hebrew speaking wife…